L.A. Triumph, Inc. v. Madonna Louise Veronica Ciccone et al

Filing 14

ANSWER to Amended Complaint 9 filed by Defendant Macy's Retail Holdings, Inc.(Belfield, George)

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1 GREENBERG TRAURIG, LLP George M. Belfield (SBN 100272) 2 Email: belfieldg@gtlaw.com 3 Nina D. Boyajian (SBN 246415) Email: boyajiann@gtlaw.com 4 2450 Colorado Avenue, Suite 400 East Santa Monica, CA 90404-5524 5 Telephone: (310) 586-7700 6 Facsimile: (310) 586-7800 7 Attorneys for Defendants MADONNA LOUISE VERONICA CICCONE, 8 MATERIAL GIRL BRAND, LLC, MG ICON, LLC and MACY'S RETAIL HOLDINGS, INC. 9 10 UNITED STATES DISTRICT COURT 11 CENTRAL DISTRICT OF CALIFORNIA 12 WESTERN DIVISION 13 14 15 L.A. TRIUMPH, INC., a California corporation, 16 Plaintiff, 17 18 vs. 19 MADONNA LOUISE VERONICA CICCONE, an individual; MATERIAL . 20 GIRL BRAND, LLC, a Delaware limited liability company; MG ICON, a Delaware 21 limited liability company; MACY'S RETAIL HOLDINGS, INC., a Delaware 22 corporation; and DOES 1 through 10, 23 Defendants. 24 l-------------~ CASE NO. CV 10 6195-SJO (JCx) DEFENDANT MACY'S RETAIL HOLDINGS, INC.'S ANSWER TO FIRST AMENDED COMPLAINT DEMAND FOR JURY TRIAL 25 26 27 28 MACY'S' 129,174,992 v1 ANSWER TO FIRST AMENDED COMPLAINT 1 Defendant Macy's Retail Holdings, Inc. ("Macy's"), for itself alone, hereby 2 answers Plaintiff L.A. Triumph, Inc.' s ("L.A. Triumph") First Amended Complaint 3 ("FAC") as follows: 4 5 JURISDICTION 1. AND VENUE Answering paragraph 1 of the FAC, Macy's admits that this Court has 6 jurisdiction over these federal question trademark claims under the Lanham Act. 7 2. Answering paragraph 2, Macy's admits that venue is proper in this District. 8 9 PARTIES 3. Macy's lacks sufficient information and belief to answer the allegations of 10 paragraph 3 and, therefore, denies each and every allegation therein. 11 4. Macy's lacks sufficient information or belief to answer the allegations of 12 paragraph 4 and, therefore, denies each and every allegation therein. 13 5. Macy's lacks sufficient information or belief to answer the allegations of 14 paragraph 5 and, therefore, denies each and every allegation therein. 15 6. Macy's lacks sufficient information and belief to answer the allegations of 16 paragraph 6 and, therefore, denies each and every allegation therein. 17 7. Answering paragraph 7, Macy's admits and alleges that it is a corporation 18 existing under the laws of New York with its principal place of business in Cincinnati, 19 Ohio. Macy's further admits and alleges that it operates retail department stores in 20 California and other parts of the United States. 21 8. Macy's denies the allegations of paragraph 8. 22 23 FACTS COMMON TO ALL COUNTS 9. Macy's lacks sufficient information or belief to answer the allegations of 24 paragraph 9 and, therefore, denies each and every allegation therein. 25 10. Macy's lacks sufficient information or belief to answer the allegations of 26 paragraph 10 and, therefore, denies each and every allegation therein. 27 11. Answering paragraph 11, Macy's admits that the public record discloses that 28 there was a trademark registration filed by O.C. Mercantile with the California Secretary 1 MACY'S' 129,174,992 v1 ANSWER TO FIRST AMENDED COMPLAINT 1 of State, No. 102808, for "Material Girl" on about August 5, 1997, but allege that said 2 trademark registration expired on or about August 5,2007. Except as expressly admitted 3 and alleged herein, Macy's lacks sufficient information or belief to answer the other 4 allegations of paragraph 11 and, therefore, denies said allegations. 5 12. Macy's lacks sufficient information or belief to answer the allegations of 6 paragraph 12 and, therefore, denies each and every allegation therein. 7 13. Macy's lacks sufficient information or belief to answer the allegations of 8 paragraph 13 and, therefore, denies each and every allegation therein. 9 14. Macy's lacks sufficient information or belief to answer the allegations of 10 paragraph 14 and, therefore, denies each and every allegation therein. 11 15. Macy's lacks sufficient information or belief to answer the allegations of 12 paragraph 15 and, therefore, denies each and every allegation therein. 13 16. Macy's denies the allegations of paragraph 16. 14 17. Answering paragraph 17, Macy's admits and alleges that MG Icon in 2010 15 has been involved in selling a line of juniors' clothing for young women utilizing the 16 mark "Material Girl" including through Macy's. Except as expressly admitted and 17 alleged herein, Macy's denies the other allegations of paragraph 17. 18 18. Macy's lacks sufficient information or belief to answer the allegations of 19 paragraph 18 and, therefore, denies each and every allegation therein. 20 19. Answering paragraph 19, Macy's admits that Material Girl Brand, LLC, 21 now known as MG Icon, LLC, filed a United States Trademark Application on 22 December 4,2009 for the "Material Girl" mark for clothing in international class 025 and 23 other classes under application No. 77/886,045. Except as expressly admitted and 24 alleged herein, Macy's denies the other allegations of paragraph 19. 25 20. Answering paragraph 20, Macy's admits that MG Icon obtained certain 26 rights to the "Material Girl" name, and that MG Icon, among others, is responsible for 27 manufacturing the t'Material Girl" line of juniors , clothing. Except as expressly admitted 28 and alleged herein, Macy's denies the other allegations of paragraph 20. 2 MACY'S' 129,174,992 v1 ANSWER TO FIRST AMENDED COMPLAINT 1 21. Answering paragraph 21 ~Macy's admits and alleges that Macy's is a retailer 2 currently selling, advertising, and promoting the "Material Girl" line of juniors' clothing. 3 Except as expressly admitted and alleged herein, Macy's denies the other allegations of 4 paragraph 21. 5 22. 6 Macy's denies the allegations of paragraph 22. ANSWER TO FIRST CLAIM FOR RELIEF 7 (Declaratory Relief against MGB, Madonna, and MG Icon under 28 U.S.C. § 2201) 8 23. Answering paragraph 23~Macy's incorporates by reference paragraphs 1 9 through 22, inclusive, of this Answer as if set forth in full herein. 10 24. Macy's is not a party to the First Claim for Relief which is not alleged 11 against Macy's and, therefore, is not answering paragraph 24. 12 25. Macy's is not a party to the First Claim for Relief which is not alleged 13 against Macy' s and, therefore, is not answering paragraph 25. 14 ANSWER TO SECOND CLAIM FOR RELIEF 15 (Violation of Lanham Act § 43(a) against MGB and DOES 1-10) 16 26. Answering paragraph 26, Macy's incorporates by reference paragraphs 1 17 through 25, inclusive, of this Answer as if set forth in full herein. 18 27. Macy's lacks sufficient information or belief to answer the allegations of 19 paragraph 27 and, therefore, denies said allegations. 20 28. Macy's lacks sufficient information or belief to answer the allegations of 21 paragraph 28 as to Plaintiff and, therefore, denies said allegations. 22 29. Answering paragraph 29, Macy's admits and alleges that MG Icon and/or 23 Macy's has in 2010, and continues to advertise and sell certain clothing using the name 24 Material Girl. Macy's lacks sufficient information or belief to answer the other 25 allegations of paragraph 29 and, therefore, denies said allegations. 26 30. Macy's denies the allegations of paragraph 30. 27 31. Macy's denies the allegations of paragraph 31. 28 32. Macy's denies the allegations of paragraph 32. 3 MACY'S' 129,174,992 v1 ANSWER TO FIRST AMENDED COMPLAINT 1 AFFIRMATIVE DEFENSES 2 FIRST AFFIRMATIVE DEFENSE 3 (Failure to State a Claim for Relief) 4 1. Plaintiff s FAC, and each claim for relief therein, fails to state facts 5 sufficient to constitute a claim for relief against Macy's. 6 SECOND AFFIRMATIVE DEFENSE 7 (Prior Use) 8 2. The other defendants or their predecessors-in-interest have used the 9 "Material Girl" mark since in or about 1985, which is more than a decade before 10 Plaintiff s alleged use. 11 THIRD AFFIRMATIVE DEFENSE 12 (Abandonment) 13 3. Plaintiffs registration of the "Material Girl" mark was limited to the State 0 14 California, expired on or about August 5, 2007, and has been abandoned by Plaintiff. 15 FOURTH AFFIRMATIVE DEFENSE 16 (No Likelihood of Confusion) 17 4. Macy's contends that Plaintiffs uses of the "Material Girl" name and 18 trademark were and are improper. In any event, there is no likelihood of confusion for 19 the public due to Macy' s' uses of the "Material Girl" name and mark; indeed, it is 20 Plaintiff s use of the name and mark which is likely to cause confusion for the public. 21 FIFTH AFFIRMATIVE DEFENSE 22 (Fair Use) 23 5. Plaintiff s claims are barred under the doctrine of fair use because Macy's' 24 use of the name "Material Girl" includes using the name to identify the person endorsing 25 MG Icon's business, i.e. Madonna, who popularized the name "Material Girl," and gave 26 it secondary meaning; Macy' s' use of the "Material Girl" name and mark does not 27 describe or capitalize on plaintiffs use of "Material Girl." 28 4 MACY'S' 129,174,992 v1 ANSWER TO FIRST AMENDED COMPLAINT 1 SIXTH AFFIRMATIVE DEFENSE 2 (Laches) 3 6. Plaintiff has failed for over 15 years to raise any issues with or contest prior 4 uses of the "Material Girl" name and mark and Plaintiff s FAC is thus barred under the 5 doctrine of laches. 6 SEVENTH AFFIRMATIVE DEFENSE 7 (Estoppel) 8 7. Plaintiffs FAC is barred under the doctrine of estoppel. For example, when 9 due diligence was done on the "Material Girl" trademark for registration purposes, there 10 was no federal registration by Plaintiff, and the California registration had expired and 11 was abandoned; co-defendants reasonably relied on this fact in applying to register and in 12 using the "Material Girl" mark in the retail clothing applications alleged in the FAC. 13 Furthermore, Plaintiff over the years never contacted defendants, or their related parties 14 or representatives, to make any claims or complaints with respect to the "Material Girl" 15 name. 16 EIGHTH AFFIRMATIVE DEFENSE 17 (Misrepresentations and Fraud Re Plaintiff's Trademark Registration) 18 8. Macy's is informed and believes, and thereon alleges, that Plaintiff procured 19 its California trademark registration for "Material Girl" based on misstatements, 20 omissions of fact, misrepresentations and/or fraud including, without limitation, 21 representing in 1997 that to Plaintiffs, or Plaintiffs predecessorO.C. Mercantile's, best 22 knowledge and belief, no other person, firm or corporation had the right to use such mark 23 in California, either in identical form or in such near resemblance thereto as might be 24 calculated to deceive or confuse. 25 NINTH AFFIRMATIVE DEFENSE 26 (Unclean Hands) 27 9. Plaintiffs FAC is barred under the doctrine of unclean hands due to 28 Plaintiffs own inequitable conduct with respect to this matter. 5 MACY'S' 129,174,992 v1 ANSWER TO FIRST AMENDED COMPLAINT 1 TENTH AFFIRMATIVE DEFENSE 2 (No Damages) 3 10. Plaintiff has suffered no damages as a result of Macy's' uses of the 4 "Material Girl" name and mark; indeed, Plaintiff, on information and belief, may have 5 benefited from Macy's' use of the "Material Girl" name. 6 ELEVENTH AFFIRMATIVE DEFENSE 7 (Sham Litigation) 8 11. Plaintiff s FAC constitutes sham litigation filed for an improper purpose to 9 interfere with and suppress fair competition. 10 TWELFTH AFFIRMATIVE DEFENSE 11 (Statute of Limitations) 12 12. Plaintiff s FAC, and each claim for relief therein, is barred by the applicable 13 statutes of limitations. 14 WHEREFORE, defendant Macy's Retail Holdings, Inc. prays for relief as follows: 15 1. That plaintiff take nothing on its First Amended Complaint, and that this 16 action be dismissed with prejudice; 17 2. For attorney's fees as allowed by law; 18 3. For its costs of suit herein; and 19 4. For such further and other relief as the Court deems just and proper. 20 GREENBERG TRAURIG, LLP 21 Dated: November 3,2010 22 lsi George M. Belfield By: 23 GEORGE M. BELFIELD Attorneys for Defendants MADONNA LOUISE VERONICA CICCONE, MATERIAL GIRL BRAND, LLC, MG ICON, LLC and MACY'S RETAIL HOLDINGS, INC. 24 25 26 27 28 6 MACY'S' 129,174,992 vi ANSWER TO FIRST AMENDED COMPLAINT DEMAND FOR JURY TRIAL 1 2 3 Defendant Macy's Retail Holdings, Inc. hereby demands a trial by jury. 4 GREENBERG TRAURIG, LLP 5 Dated: November 3, 2010 6 lsi George M. Belfield By: 7 GEORGE M. BELFIELD Attorneys for Defendants MADONNA LOUISE VERONICA CICCONE, MATERIAL GIRL BRAND, LLC, MG ICON, LLC and MACY'S RETAIL HOLDINGS, INC. 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 7 MACY'S' 129,174,992 v1 ANSWER TO FIRST AMENDED COMPLAINT

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